Thursday, February 09, 2017

TTAB Test: Is 100 PERCENT WINE Confusable with CENTO PER CENTO for Wine?

The USPTO refused registration of the mark 100 PERCENT WINE, finding it likely to cause confusion with the registered mark CENTO PER CENTO, both for wine. The English translation of the Italian term is '100 percent.' Applicant argued that 99.7% of Americans who are old enough to purchase wine do not speak Italian, and therefore the average American purchaser would not stop and translate the mark into English. How do you think this came out? In re Big Heart Wine, LLC, Serial No. 86376188 (January 20, 2017) [not precedential].

The Board found no need to determine whether Italian is familiar to an appreciable segment of American consumers. The doctrine of equivalents applies to "words from common, modern languages." The doctrine has been applied to Italian terms in a number of Board rulings. In any case, applicant's own evidence showed that Italian is a common, modern language. As of 2007, nearly 800,000 Americans spoke Italian.

Applicant next argued that consumers will translate a familiar foreign word only when the word is descriptive of the goods. However, it cited no authority for that proposition, and the Board found none.

The Board observed that applying the doctrine of equivalents to discern the meaning of the foreign term is only part of the Du Pont analysis. The Board must also consider the similarity or dissimilarity of the marks in appearance, sound, and all other Du Pont factors.

Here, the Board found applicant's mark 100 PERCENT WINE to be similar in appearance and sound to CENTO PER CENTO, since PERCENT sounds like PER CENTO. CENTO PER CENTO is conceptually strong as a trademark. Of course, the goods are identical and the Board must presume that they travel through the same channels of trade to the same classes of consumers.

Finally, applicant argued that the goods would be purchased by sophisticated consumers, but the identifications of goods were not limited to fine wines offered at high prices to consumers with specialized knowledge and discerning palates.

6 Comments:

I 100 percent agree. In my mind, the mark is completely descriptive, and bordering on generic. Plus it was filed on a 1(b) basis and sitting on the Principal Register. Somehow this application made it this far down the road without being rejected as being merely descriptive??? Maybe I'm missing something, but it appears that this 2(d) issue might have muddied things up and blinded the Examining Attorney to another issue that is at least as problematic as the 2(d) issue.

I completely agree with the board. According to the doctrine of foreign equivalents, a foreign word and its English equivalent may be held to be confusingly similar, and would be likely to confuse consumers. For me, personally, with only one semester of Italian taken years ago, when I see "cento per cento" I immediately translate it to 100 percent. And this brand is available at a lot of wine stores, so for a its consumers, because they have been exposed to this brand for long enough time, it's very possible that they have looked up the meaning of this Italian phrase, and when they see a similar looking wine with "100 percent wine" written on it, it's very possible for them to make the connection between "100 percent wine" to "cento per cento." Also, "100 percent wine" has a really weak argument that because the general American public don't speak Italian, they wouldn't translate it immediately. "100 percent wine" is totally ignoring the amount of Spanish speakers in this country. In Spanish, it is "cien por ciento" for "100 percent." This phrase is similar enough to "cento per cento" and it is not unreasonably hard for a Spanish speaker to understand "cento per cento."